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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
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`
`
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`13/355,458
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`01/20/2012
`
`Ian Gibbons
`
`30696—733201
`
`1056
`
`Theranos, Inc.
`1701 Page Mill Rd
`Palo Alto, CA 94304
`
`REYES, CHRISTOPHER R
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`ART UNIT
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`1639
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`PAPER NUIVIBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`01/27/2015
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
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`docketing @theranos.com
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`PTOL—90A (Rev. 04/07)
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`
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`Application/Control Number: 13/355,458
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`Page 2
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`Art Unit: 1639
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`ADVISORY ACTION
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`The present application is being examined under the pre-AIA first to invent provisions.
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`Continuation of 7 & 12
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`(i) The rejection of claims 34 and 35 under 35 U.S.C. 103(a) as being
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`unpatentable over US 20030138140 (hereinafter Marcelpoil) in view of Tholouli et al
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`(2006 Biochemical and Biophysical Research Communications 348: 628-636) and PG-
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`Pub 20080038771 (hereinafter Taylor) is maintained.
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`(ii) The rejection of claim 37 under 35 U.S.C. 103(a) as being unpatentable over
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`Marcelpoil in view of Tholouli et al and Taylor as applied to claims 34 and 35 above, and
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`further in view of Resch-Genger et al (September 2008 Nature Methods 5: 763- 775) is
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`maintained.
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`(iii) The rejection of claim 34, 35, 37, 95, 99, 101, 102, 103, 104, 107, and 108
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`under pre-AIA 35 U.S.C. 103(a) as being unpatentable over US 6013528 (hereinafter
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`Jacobs) in view of Marcelpoil is maintained.
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`The 12/08/2014 reply to the final office action sets forth in paragraphs 2-4 on
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`page 4 that Applicants traverse rejections (i) and (ii) for at least the reasons set forth in
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`Application/Control Number: 13/355,458
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`Page 3
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`Art Unit: 1639
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`the Office Action response dated June 24, 2013. Additionally, in the last two
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`paragraphs on page 4, the reply indicates that Applicant traverses rejection (iii);
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`however, no reasoning whatsoever is provided.
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`In regard to Applicant’s traversal of (i) and (ii), Applicant does not offer further
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`arguments beyond what was set forth in the June 24, 2013 reply. To the extent that
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`Applicant is merely repeating their previous argument, the Examiner contends that
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`those issues were adequately addressed in the final office action, especially the
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`Response to Arguments section on pages 8-10, which is/are incorporated in their
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`entireties herein by reference.
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`Additionally regarding Applicant's traversal of rejections (i), (ii), and (iii), Applicant
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`is invited to 37 CFR 1.1 1 1 (b): " in erder te he entitied te reconsideration er further
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`examination, the applicant er patent owner must repiy to the Qttiee aetien. The reply by
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`the applicant er patent ewner must he reduced te a writing which dietinetiy and
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`epeeitieahy peinte eet the euppeeed errere in the examiner’s aetien and meet reply
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`to everyi greund pt epieetien and rejectien in the prior Office aetien.” Applicant requests
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`further eeneideratien et rejections {i} and (ii) an the haeie et ieeuee first raieed in the
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`June 24, 2013 repty. However, Apptieant has net neted that the examiner hae already
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`reepended te these concerns, much less identified any euppeeed errere wheteeever in
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`examiner’s reepenee. Applicant eiee deee net identity any euppeeed errere wheteeever
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`in regard te reieetieh (iii). Thee, pursuant ta 3? CFR H t “i {is}, the reply deee net meet
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`the requirements; te he entitled to reeeneideratien et any et theee r‘ejeetiens {Mitt},
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`which are aeeerdingiy maintained.
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`
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`Application/Control Number: 13/355,458
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`Page 4
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`Art Unit: 1639
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`Any inquiry concerning this communication or earlier communications from the
`examiner should be directed to CHRISTOPHER REYES whose telephone number is
`(571)272-7082. The examiner can normally be reached on Monday to Thursday, 8:00
`to 5:30 EST.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`supervisor, Heather Calamita can be reached on 571-272—2876. The fax phone number
`for the organization where this application or proceeding is assigned is 571-273-8300.
`Information regarding the status of an application may be obtained from the
`Patent Application Information Retrieval (PAIR) system. Status information for
`published applications may be obtained from either Private PAIR or Public PAIR.
`Status information for unpublished applications is available through Private PAIR only.
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`you have questions on access to the Private PAIR system, contact the Electronic
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`USPTO Customer Service Representative or access to the automated information
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272—1000.
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`C. R.
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`Examiner, Art Unit 1639
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`/CHRISTOPHER M GROSS/
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`Primary Examiner, Art Unit 1639
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`
